Holder: Written submissions by Addisons Lawyers

2025 ATMO 83

Regulation 17A.24: final decision on examination - consideration of section 41 of the Trade Marks Act 1995 -trade mark has no inherent adaptation to distinguish - no evidence of use provided - extension of protection refused

1. On 17 November 2023, Pelago Bioscience AB ('Holder') applied to extend protection to Australia of International Registration 1650284 under the provisions of the Trade Marks Act 1995 ('Act') and Trade Marks Regulations 1995 ('Regulations'). Such an application is referred to as an International Registration Designating Australia ('IRDA'). The current details of the IRDA appear below:

Class 1: Chemical compositions and materials for use in science; biochemicals for in vitro and in vivo scientific use; diagnostic preparations for scientific or research use; in-vivo diagnostic reagents for scientific use; tagged antibodies for scientific use; polymers for use in the analysis of proteins; reagents for scientific purposes; compositions for scientific use in the preparation of culture media; substances for laboratory use; testing reagents for scientific use; universal reagents for automated test systems [laboratory]; universal reagents for automated test systems [scientific]; substances for scientific use; enzymes for scientific purposes; enzymes [other than for medical use] in detecting proteins; proteins for detecting antibodies [other than for medical use]; proteins for use in science; protein [raw material]; chemical substances for impregnation into membranes to separate proteins from liquids; enzymes [other than for medical use] for measuring proteins; chemical substances for analysis in laboratories; none of the aforesaid as being for 'Pisa Syndrome'.

Class 5: Enzymes for medical purposes; diagnostic biomarker reagents for medical purposes; diagnostic chemical reagents for medical use; diagnostic preparations for medical or veterinary purposes; diagnostic testing materials for medical use; diagnostic reagents for medical use; indicators for medical diagnosis; chemical reagents for medical or veterinary purposes; chemical test reagents [medical]; chemical test reagents [veterinary]; reagents for analytical purposes [for medical purposes]; reagents for use in analysis [for medical purposes]; reagents for in-vitro laboratory use [for medical purposes]; reagents and media for medical and veterinary diagnostic purposes; none of the aforesaid as being for 'Pisa Syndrome'.

Class 42: Services of a chemical and/or biological laboratory; research and development services in the field of chemistry; laboratory testing; laboratory analysis in the field of chemistry; laboratory services; analytical laboratory services; scientific laboratory services; biological laboratory services; testing of pharmaceuticals; analysis of human tissues for medical research; research on the subject of pharmaceuticals; research and development of vaccines and medicines; conducting early evaluations in the field of new pharmaceuticals; medical research; biological research, clinical research and medical research; medical laboratory services; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; pharmaceutical drug development services; scientific research and development; biochemical research and development; biochemical analysis; biochemistry research services; biological analysis; biomedical research services; chemical research and analysis services; none of the aforesaid as being for 'Pisa Syndrome'.

1. The IRDA was examined as required under reg 17A.12 of the Regulations. On 18 January 2024, IP Australia issued a first adverse examination report which amounted to a Notification of Total Provisional Refusal of the IRDA, identifying grounds for rejection pursuant to s 41 of the Act in respect of the Holder's Goods and Services ('First Report').[1] With respect to the s 41 ground, the examiner stated that the Trade Mark is not capable of distinguishing the specified goods and services because the term PISA is the name of a city in Tuscany, Italy. The First Report stated that PISA is known as a 'city of the science' which contains thirteen research institutes and has a population of approximately 90,000 and stated that other traders should be able to use the geographical name PISA in connection with the Holder's Goods and Services.
2. On 9 October 2024, the Holder provided a response to this office consisting of written submissions (without evidence of use) and on 4 November 2024 this office issued a second examination report maintaining the s 41(3) ground for rejection in respect of the Holder's Goods and Services. The Holder then requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Regulations by written submissions.
3. As a delegate of the Registrar of Trade Marks I heard this matter on 8 April 2025. In accordance with the pre-hearing directions I had given, the Holder filed written submissions on 1 April 2025. I confirm that I have considered these submissions and the submissions made on 8 October 2024 (collectively 'Holder's Submissions') in my decision.
4. The present matter is a hearing under reg 17A.17 (which is similar in nature to a request for hearing under s 33(4) of the Act). As noted in MHFC Holdings Pty Ltd[2] as well as other decisions of the Registrar (Teraglow Pty Ltd[3] and TOM Organic Pty Ltd[4]), the purpose of such a hearing is not a review of the examiner's decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. Any decision I shall make is not a review of the examiner's approach and I am not bound in any way to follow it. Rather, this proceeding will consider afresh the s 41 ground for rejection under this Act as it applies to the IRDA for the Holder's Goods and Services.

1. Regulation 17A.24 of the Regulations provides that:

(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(b) there are grounds for rejecting it, in whole or in part.

1. Regarding the present application, the only unresolved ground for rejection is under s 41 of the Act. The capacity of the Trade Mark to distinguish the Holder's Goods and Services must be assessed at the filing date, being 17 November 2023 ('relevant date').
2. Section 41 of the Act provides:

41 - Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note: For goods of a person and services of a person see section 6.

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii) the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances.

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

1. With respect to s 41 it is appropriate to discuss the 'presumption of registrability'. As was explained by the Hearing Officer in Unilever Plc v Beiersdorf AG with respect to s 33 of the Act, which corresponds to reg 17A.24:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a "presumption of registrability." As was explained by Branson J in Blount Inc v Registrar of Trade Marks ("Oregon"), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 ("the Amending Act")] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 ("the EM") stating at page 146:

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. ... The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant's favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of "inherently adapted to distinguish", "capable of distinguishing" and "does or will distinguish". The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant's goods or services from others.

Branson J's analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant's Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant's Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant's Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant's Services] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant's Services]. [that is, s 41(4) applies][5]

1. In the present case the Holder has provided no evidence of use or intended use of the Trade Mark or other circumstances. As such the ground for rejection under s 41 will apply if the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the Holder's Goods and Services from the goods or services of other persons, being the test in s 41(4), or if the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).
2. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks ("Clark Equipment") [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will "rarely eclipse" their "primary" (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, "in [their] own nature", adapted to distinguish the applicant's goods. Traders may legitimately want to use such words in connection with their goods or services "because of the reference they are 'inherently adapted to make' to those goods": Cantarella Bros Pty Limited v Modena Trading Pty Limited ("Cantarella") [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the "possible impairment" of the rights of "honest traders" and from the "point of view of the public": Cantarella at [59].

(7) In determining whether a word contains (or words contain) a "direct reference" to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a "covert and skilful allusion" to the relevant goods or services (and thus prima facie registrable as a trade mark), the "ordinary signification" of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the "legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods": Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are "allusive or metaphorical": Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of "any person in Australia concerned with the goods or services to which the trade mark is to be applied": Cantarella at [70].

(11) Consideration of the "ordinary signification" of any word or words said to constitute a trade mark is "crucial": Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the "ordinary signification" of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[6]

1. As noted in paragraph 5 above, the process I am required to undertake is not a review of the examiner's reasoning. However, it is useful to understand how the examiner considered the question of inherent adaption to distinguish in respect of the Trade Mark. I note that IP Australia's practice in respect of geographical names is that a Trade Mark that is the name of a place with the potential to have a connection with the goods or services is not prima facie registrable. This principle is well supported in case law. In Clark Equipment Co v Registrar of Trade Marks, Justice Kitto stated:

... the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods ... [7]

Similarly, in Oxford University Press v Registrar of Trade Marks, Gummow J stated:

The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[8]

Justice Bennett in Bavaria NV v Bayerischer Brauerbund eV made the following comments:

This has led to the rejection of a word of prima facie geographical signification, particularly when it is used simpliciter and where goods of the kind for which it is sought to be registered are produced at the place or in the area (Clark Equipment at 515-516), or if it is reasonable to suppose that such goods in the future would be produced there (Chancellor, Masters and Scholars of the University of Oxford (Trading as Oxford University Press) v Registrar of Trade Marks [1990] FCA 175; (1990) 24 FCR 1 at 23 per Gummow J). This is because other traders have a legitimate interest in using the geographical name to identify their goods and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration (Clark Equipment at 514-515). Justice Gummow in University of Oxford came to the view that, if a court is in doubt as to the likelihood of another trader legitimately wishing to use a mark, the application should be refused (at 25). In Clark Equipment, Kitto J held that the word MICHIGAN was not adapted and was not capable of becoming adapted to distinguish earth-moving and other equipment. Similarly, OXFORD was refused for printed publications (University of Oxford) and COLORADO refused for bags (Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506). In each case, the registration sought was of a word mark that connoted a geographical location.[9]

1. The Holder's Submissions in respect of s 41 are summarised below:
   • While the city of Pisa is a historic city known for its rich architecture and home to educational institutions such as the University of Pisa, it does not have any particular reputation in science and technology. The Holder is not aware of any drug discovery or development businesses in Pisa or that it has any reputation in this space.
   • When interpreting the relevant case law with respect to geographical terms, the key requirement is to determine if the geographical location has a particular reputation for the goods and services that are sought to be registered. In circumstances where Pisa is not a major geographical centre and has no particular reputation for the production of the Holder's Goods and Services, the Trade Mark is inherently adapted to distinguish; it is highly unlikely that other traders will desire to use the Trade Mark in connection with the Holder's Goods and Services.
2. As noted in the case law quoted, the first step is to determine the ordinary signification of the Trade Mark and whether traders for the Holder's Goods and Services will want to use it for its ordinary signification. If I am satisfied that the Trade Mark does not operate by itself to distinguish the Holder's Goods and Services (that is s 41(3) or 41(4) applies) then, as noted in paragraph 8 above, the Trade Mark is not registrable.
3. I am satisfied that the ordinary signification of the Trade Mark is the geographical location in Italy that, notwithstanding its size, has a significant global reputation due to the presence of the well-known attraction the Leaning Tower of Pisa and has a significant reputation in education due to the presence of a number of historic education and research institutions. While the Holder has made reference to other meanings of PISA, such as an abbreviation for 'protein integral solubility alteration' or 'Programme for International Student Assessment', the mere existence of alternative meanings, especially acronyms, are not relevant to my consideration unless it is established that individuals in the relevant market would view the mark and think of the alternative meaning.[10] I am not satisfied that this is the case.
4. The Holder's Goods and Services, being broadly categorised as chemical compositions, enzymes and various scientific research services, are goods and services that are generally supplied by sophisticated businesses or educational institutions and hence are unlikely to be supplied from rural areas, villages and hamlets. Were the mark sought to be registered for a small regional village, I would be prepared to accept the Holder's Submissions that there is no realistic prospect of the Holder's Goods and Services being produced from that region. This is not the case here; the city of Pisa is an urban area of some size and one that has a number of educational institutions; indeed I consider it highly likely that some of the Holder's Goods and Services, such as 'chemical compositions and materials for use in science' or 'research and development services in the field of chemistry; laboratory testing' would be provided by the research institutions in this jurisdiction. These goods and services and others for which protection is sought to be extended are goods and services where the name of the locality may be desired to be used, in the normal course of trade, without improper motive, by other traders to describe the origin of their similar goods or services. Following the case law set out at paragraph 11 above and note 1 to s 41, I am satisfied that the Trade Mark is not to any extent inherently adapted to distinguish the Holder's Goods and Services from those of other persons. Accordingly, I am satisfied that the Trade Mark should be considered under s 41(3).
5. Specifically, I am not persuaded by the Holder's Submissions that in rejecting the application to extend protection, this office is required to identify a particular reputation held by the geographical location in the Holder's Goods and Services. This is a misreading of the case law which does not require a reputation in a locality but merely that it is reasonable to suppose that goods and services are or would in the future would be produced there. Given that the town of Pisa is a significant urban area and contains research universities, it is entirely plausible that a significant number of the Holder's Goods and Services (particularly the broad research services in class 42 or the broad claims to chemical production in class 1) have or could be produced in the geographical region.
6. A further misnomer advanced in the Holder's Submissions is that the Holder's Goods and Services are goods and services that must be provided by a large commercial entity assisting pharmaceutical companies in connection with the drug development process; while that may describe the Holder, it is entirely plausible that certain claims in the Holder's Goods and Services can be produced or provided by academic institutions or smaller (but sophisticated) businesses. I note that the Holder does not seek to extend protection for the Trade Mark for specialised pharmaceutical drug development services; rather it seeks to extend protection for a broad range of goods and services concerning chemical production and scientific research.
7. Finally, the Holder notes that the Trade Mark has been registered in the United Kingdom and has not received a distinctiveness objection as part of the initial examination in the United States. While I accept the principle outlined by the delegate in Unilever PLC[11] that if the matter approaches the borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions under analogous circumstances, the first step is to reach an independent conclusion as to whether the Trade Mark is inherently adapted to distinguish the Holder's Goods and Services; decisions made by other countries only being relevant, at best, in borderline cases (especially noting the different case law of the various countries). aAs I have found that the Trade Mark falls under s 41(3) of the Act, this is not such a case.
8. As the Trade Mark is not to any extent inherently adapted to distinguish the Holder's Goods and Services and there is no evidence of use, the IRDA must be rejected under s 41 of the Act.

(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

(2) The Registrar may accept the IRDA subject to conditions or limitations.

(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(b) there are grounds for rejecting it, in whole or in part.

1. I am satisfied that there is a ground for rejecting the IRDA under s 41(3) of the Act. I must reject the IRDA in accordance with reg 17A.24 which I now do. If, however, the Registrar is served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the IRDA be in accordance with the Court's direction or order.

[1] The report identified a ground for rejection pursuant to s 41(4) of the Act relating to the similarity between the Trade Mark and Pisa syndrome and a ground for rejection pursuant to s 41(3) and a ground for rejection relating to an incorrect classification of certain services however the s 41(4) ground and the classification issue were resolved as part of the examination process through an amendment to the specification and do not require further discussion.

[2] [2016] ATMO 96, [9] (Hearing Officer Wilson).

[3] [2016] ATMO 32, [5] (Hearing Officer Worth).

[4] [2018] ATMO 46, [5] (Hearing Officer Worth).

[5] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov) (citation omitted).

[6] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

[7] [1964] HCA 55, [7].

[8] [1990] FCA 175, [41].

[9] [2009] FCA 428, [66].

[10] See discussion in Colliers International (WA) Pty Ltd [2022] ATMO 37, (Hearing Officer Smith).

[11] [2001] ATMO 39 (Hearing Officer Williams).